Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Notice of Pre-AIA or AIA Status
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of Species A (figures 1-5), including claims 1-3 and 7-13, in the reply filed on 06/05/2026 is acknowledged.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 7-8 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (CN 211786303).
Regarding claim 1, Zhang et al. (figure 11) discloses a lens unit comprising:
a holding member (10) that holds a lens on an inner circumference side; and
a pressing member (30) that is disposed on an inner circumference of the holding member, contacts a contact surface of the holding member from an optical axis direction, is fixed to the holding member by a fixing member (40), and thereby presses the lens against the holding member from the optical axis direction,
wherein the holding member has a first concave portion that is concave toward an outside in a radial direction at at least one location in a circumferential direction,
wherein the pressing member has a second concave portion that is concave toward an inside in the radial direction at at least one location in the circumferential direction, and
wherein the fixing member is disposed in an area facing the first concave portion, the second concave portion, and the contact surface (figure 11).
The limitation, “thereby presses the lens against the holding member from the optical axis direction” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Zhang et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 2, Zhang et al. (figure 11) discloses wherein the fixing member is an adhesive (40).
Regarding claim 3, Zhang et al. (figure 11) discloses wherein the holding member has an inner-circumference threaded portion, wherein the pressing member has an outer-circumference threaded portion, and wherein the pressing member is assembled to the holding member by screwing the outer-circumference threaded portion into the inner-circumference threaded portion until the pressing member contacts the contact surface, and is fixed to the holding member by the adhesive (10, 30, 40).
The limitation “wherein the pressing member is assembled to the holding member by screwing the outer-circumference threaded portion into the inner-circumference threaded portion until the pressing member contacts the contact surface, and is fixed to the holding member by the adhesive” is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
Regarding claim 7, Zhang et al. (figure 11) discloses wherein the first concave portion is provided at at least one location in the circumferential direction of the inner-circumference threaded portion, and wherein the second concave portion is provided at at least one location in the circumferential direction of the outer-circumference threaded portion (30 and 40; figure 11).
Regarding claim 8, Zhang et al. (figure 11) discloses wherein at least one of the first concave portion and the second concave portion is formed such that a width in the radial direction of the area increases toward a side opposite the contact surface in the optical axis direction (30 and 40; figure 11).
Regarding claim 9, Zhang et al. (figure 11) discloses wherein at least one of the first concave portion and the second concave portion has a length in the circumferential direction longer than that of the other of the first concave portion and the second concave portion (30 and 40; figure 11).
Regarding claim 11, Zhang et al. (figure 11) discloses an image pickup apparatus comprising
a lens unit; and
an image sensor configured to image an object through the lens unit (see at least abstract),
where the lens unit includes:
a holding member (10) that holds a lens on an inner circumference side; and
a pressing member (30) that is disposed on an inner circumference of the holding member, contacts a contact surface of the holding member from an optical axis direction, is fixed to the holding member by a fixing member (40), and thereby presses the lens against the holding member from the optical axis direction,
wherein the holding member has a first concave portion that is concave toward an outside in a radial direction at at least one location in a circumferential direction,
wherein the pressing member has a second concave portion that is concave toward an inside in the radial direction at at least one location in the circumferential direction, and
wherein the fixing member is disposed in an area facing the first concave portion, the second concave portion, and the contact surface (figure 11).
The limitation, “thereby presses the lens against the holding member from the optical axis direction” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Zhang et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 211786303) in view of Ishikawa (WO 2020/170619).
Regarding claim 10, Zhang et al. discloses the limitations as shown in the rejection of claim 1 above. However, Zhang et al. is silent regarding an elastic member. Ishikawa (figures 1-5) teaches wherein an elastic member is disposed between the pressing member and the lens, and wherein the pressing member presses the lens against the holding member via the elastic member (8A,12, 18, 19; The filling concave portion 10b is a concave portion filled with an adhesive, and is formed continuously with the screw hole 10a in the circumferential direction of the lens holding ring 4; see at least page 3, the last three paragraphs). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the elastic member as taught by Ishikawa in order to protect the lens when an impact is applied to the lens.
Regarding claim 12, Zhang et al. discloses the limitations as shown in the rejection of claim 11 above. However, Zhang et al. is silent regarding a housing. Ishikawa (figures 1-5) teaches a housing (201-202) that holds the lens unit and the image sensor (204) on an inner circumference side, wherein the lens unit is held by the housing so that a position of the lens unit can be adjusted in the optical axis direction relative to the image sensor. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the elastic member as taught by Ishikawa in order to protect the lens when an impact is applied to the lens.
The limitation “the lens unit is held by the housing so that a position of the lens unit can be adjusted in the optical axis direction relative to the image sensor” is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
Regarding claim 13, Ishikawa (figures 1-5) teaches a second seal member (21) is disposed between an inner circumference portion of the housing and an outer circumference portion of the holding member.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
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